Journal of Intellectual Property Law
Volume 19 | Issue 2
Article 12
March 2012
Crossing the Line: The Collegiate Licensing
Company's Overindulgent Attempt to Limit Small
Businesses' Online Marketing Techniques Based on
Frivolous Claims of Trademark Infringement
Lauren T. Warbington
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Recommended Citation
Lauren T. Warbington, Crossing the Line: The Collegiate Licensing Company's Overindulgent Attempt to Limit Small Businesses' Online
Marketing Techniques Based on Frivolous Claims of Trademark Infringement, 19 J. Intell. Prop. L. 517 (2012).
Available at: http://digitalcommons.law.uga.edu/jipl/vol19/iss2/12
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Warbington: Crossing the Line: The Collegiate Licensing Company's Overindulge
CROSSING THE LINE: THE COLLEGIATE
LICENSING COMPANY'S OVERINDULGENT
ATTEMPT TO LIMIT SMALL BUSINESSES'
ONLINE MARKETING TECHNIQUES BASED ON
FRIVOLOUS CLAIMS OF TRADEMARK
INFRINGEMENT
Lauren T Warbington*
TABLE OF CONTENTS
I.
INTRODUCTION
II.
B ACK G RO UN D .............................................................................................
A. HISTORY OF THE LANHAM ACT.........................................................
B. TRAD EM ARK LAW ................................................................................
...........................................
1. Trademarks Generally
..............................
2. GeographicalTerms..........................................................................
3. Trademark Infringement...................................................................
4. Trademarks and the Internet............................................................
C.
D.
519
520
520
521
521
524
527
529
FAIR U SE ................................................................................................
532
IMPORTANT TRADEMARK CASES DISCUSSING COLLEGIATE
COLORS AND MARKS.......................
.................. 534
1. University of Georgia Athletic Association v. Laite............... 534
2. Board of Supervisors for Louisiana State University
Agricultural & Mechanical College v. Smack Apparel............ 534
E.
MARKETING TECHNIQUES USED BY BOUTIQUES..........................
536
J.D. Candidate 2013, University of Georgia School of Law. First and foremost, the author
wishes to thank God for blessing her with the opportunity and ability to write this Note. The
author would also like to thank her parents, Teel and Jeanie Warbington, to whom this Note is
lovingly dedicated and whose patience, guidance, and wisdom were invaluable throughout the
writing of this Note. Additionally, she wishes to thank all of her friends and family for their
eternal love and support. Finally, the author wishes to thank her fellow joarnal members for their
invaluable suggestions and edits.
517
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III.
PROP. L
[Vol. 19:517
.................................................
ANALYSIS
A. CLC 0; BOUTIQUES 1-PURE MARKETING USE VIA THE
...................................................
INTERNET
1. Goals of Trademark Law.................................................................
2. Trademarks and the Internet........................
B.
C.
IV.
537
538
538
539
540
CLC 0; BOUTIQUES 2-FAIR USE DEFENSE......................................
GAME OVER: CLC 0; BOUTIQUES 3-CLEAR DISTINCTION FROM
542
...........................................
PRECEDENT
CONCLUSION
..........................................................................
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I. INTRODUCTION
Picture this: it is Saturday in Athens, Georgia, on a cool, fall day, and the
University of Georgia's Bulldogs have just run onto the field in beautiful
Sanford Stadium. While the Bulldogs are preparing for kickoff, over 90,000
fans dressed in their finest red and black ensembles swarm around the stadium,
ready to cheer on their favorite team. As any true Bulldog fan knows, wearing
red and black on game day is practically a religious experience in Athens,
Georgia. Those symbolic colors represent a time-honored tradition of showing
school spirit at Sanford Stadium. Local boutiques recognize the importance of
wearing team colors on Saturdays in Athens, and with that understanding, those
native businesses facilitate this sea of red and black by planning months in
advance to offer a multitude of fashionable game day options to keep the
Bulldog faithful looking their best for upcoming football games.
How do the small business owners of local boutiques raise awareness about
their fashion selections for fans of college football teams in surrounding areas?
Many boutique owners have answered this question by utilizing their store's
website to group select pieces together according to school colors and to
market them based on a short, collegiate identifier that links fans to the school
of their choice. Unfortunately, this option is being deemed unacceptable by the
Collegiate Licensing Company (CLC), which is "the nation's leading collegiate
trademark licensing and marketing company, assisting collegiate institutions in
protecting, managing and developing their brands."'
By clustering a variety of dresses, skirts, blouses, pants, and shirts together
on their website based on collegiate colors and presenting those clusters to
consumers in the form of a drop down menu or sidebar that lists an
abbreviated version of each institution (for example, the University of Georgia
would be simply denoted by the term Georgia), boutiques and stores afford
their customers a unique opportunity to view all potential game day options
available at a particular establishment together in one concise place: on the
boutique or store's website. 2 This clever and efficient marketing scheme is
being targeted by the CLC and is being challenged as trademark infringement
via the issuance of strongly worded cease and desist letters.
To fully evaluate all of the nuances associated with the above-mentioned set
of facts, this Note begins with a deeper look into trademark law and how it
1 About CLC, CLC.coM, http://www.clc.com/clcweb/publishing.nsf/Content/aboutclc.html
(last visited Apr. 12, 2012).
2 See general# Kickoff Cutie, THE RED DRESS BOUTIQUE, http://www.reddressboutique.com/ki
ckoffcutie/ (last visited Apr. 12, 2012); DRESS U, http://www.shopdressu.com/shop/index.
php/gameday-dresses-accessories.html (last visited Apr. 12, 2012).
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interacts with the Internet. Next, fair use is discussed in detail. The following
portion discusses important cases that feature trademark law in the context of
collegiate colors and marks. A glimpse into the world of marketing for
boutiques and stores is examined next. Finally, the interaction between the law
and the factual situation discussed above is explored and evaluated, leading to
the conclusion that the CLC is most likely off base in its analysis.
This Note argues that the CLC's unfair competition claim is unfounded
because the use of a shortened version of a university's name cannot logically
be construed as an attempt "to cause confusion, or to cause mistake, or to
deceive as to the affiliation, connection, or association"3 between a university
and a boutique selling designer clothing that bears the school's colors but in no
way signals support from the institution. The CLC is erroneously trying to
prevent small business owners from using a legal, web-based marketing scheme
by using old-fashioned intimidation techniques and should be prevented from
the continuation of such aggressive, unwarranted harassment.
II. BACKGROUND
A. HISTORY OF THE LANHAM ACT
To fully comprehend the issues involving trademark infringement and unfair
competition, an understanding of the history of the statute that authorizes such
claims, the Lanham Act, is important. Therefore, a brief look into the purposes
and intentions behind the Lanham Act is necessary. The Congressional intent
behind the Lanham Act is:
[T1o regulate commerce within the control of Congress by
making actionable the deceptive and misleading use of marks in
such commerce; ... to protect persons engaged in such
commerce against unfair competition; to prevent fraud and
deception in such commerce by the use of reproductions, copies,
counterfeits, or colorable imitations of registered marks ... .4
Ultimately, the drafters of the Lanham Act sought to create legislation that
embodied this intent, promoting the central goal of trademark law, which is
protecting consumers.
3
4
15 U.S.C. § 1125(a)(1)(A) (2006).
Id.§ 1127.
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Following the main policies behind trademark common law, the Lanham
Act serves two main goals: (1) protecting consumers in such a way that affords
them confidence that the purchases they make are ones they intended to make,
and (2) safeguarding the owner of a trademark, who has expended much time
and effort to protect his product's reputation, from infringement by those
hoping to free-ride on the labors of the original trademark owner.5 Protection
of trademarks in its purest form seeks to shield consumers from deceit, to
promote and nurture fair competition, and to allow members of the business
community to feel secure in the development and fostering of the good will and
reputation of their businesses. 6 Without these protections, consumers would
essentially be left to their own devices to determine which product represents
the brand they actually intended to purchase.7 Also, because businesses would
not be afforded any benefits for their efforts to aid consumers in the shopping
process, those businesses would have little to no incentive to make consumers'
choices obvious and easy. This would ultimately result in consumer chaos as
well as in a decrease in overall competition in the market.8
B. TRADEMARK LAW
To accurately evaluate the CLC's trademark infringement claims against
small business owners and to determine that those claims are unfounded, a
closer look at trademark law is necessary. First, a general overview of
trademark law is discussed. Second, geographical terms and their relationship
to trademark law are briefly outlined. Third, the nuances of a valid trademark
infringement claim are explored. Fourth, the interaction between trademark law
and the Internet is examined.
1. Trademarks Generally. Before diving into the inapplicability of trademark
infringement law in the case at issue here, a deeper look at trademarks is both
appropriate and necessary. According to the Lanham Act, a trademark is
defined as: "any word, name, symbol, or device, or any combination thereof
5 Edward S. Rogers, The LanhamAct and the Sodal Function of Trade-marks, 14 LAW & CONTEMP.
PROBS. 173, 181 (1949); see also 1 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND
UNFAIR COMPETITION § 2.2 (4th ed. 2012) (discussing the dual goals of trademark law).
Rogers, supra note 5, at 182.
1 McCARTHY, supra note 5, § 2:5.
8 1 id. § 2.3 (quoting Trademark CounterfeiingAct of 1982: Hearing on S. 2428 Before S. Comm. on
the Judiciag,97th Cong. 13 (1982) (statement of Rep. William F. Baxter, Member, S. Comm. on
the Judiciary) (explaining that permissive counterfeiting of trademarks "would eventually destroy
the incentive of trademark owners to make the investments in .. . activities necessary to
establishing strong marks and brand names. It is this result that would have severe
anticompetitive consequences.")).
6
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used by a person . .. to identify and distinguish his or her goods, including a
unique product, from those manufactured or sold by others and to indicate the
source of the goods, even if that source is unknown." 9
In a market that is bursting with competing sellers, trademarks perform the
vital function of allowing the public to discriminate among different vendors of
the same good.'0 Trademarks serve two important market functions from an
economic standpoint: (1) encouraging the production of quality goods, and (2)
reducing consumer transaction costs through efficient marketing and packaging
of goods."
First, trademarks encourage production of quality products by holding
producers and sellers accountable for the quality level of each product
associated with that producer or seller's mark.12 The Lanham Act affords the
owner of a trademark limitless discretion in controlling the quality of the
products created and sold under that distinct trademark.13 Trademarks serve as
catalysts prompting the creation of high caliber goods.14 With the benefit of
quality control comes the responsibility, which translates into the incentive, to
create a predictably high quality product. 5
Second, trademarks benefit consumers by reducing search costs.16 Instead
of leaving consumers to their own devices and forcing them to spend endless
amounts of time researching products prior to making a purchase, trademarks
facilitate a pleasant and efficient shopping experience for consumers by serving
as "shorthand indicators" of quality. 7 Trademarks ultimately aid consumers by
serving as tools that narrow and compartmentalize the available information
about a particular product according to brand, thereby allowing the consumer
to shop brand names rather than forcing him to research every product
separately.' 8 This timesaving benefit to consumers allows them to shop more
confidently and efficiently. 9
9 15 U.S.C. § 1127 (2006).
10 1 MCCARTHY, spra note
"1
5,
Also, because the information provided by
§2:13.
1 id. § 2:3; see also BEVERLY W. PATTISHALL, DAVID C. HILIARD & JOSEPH N. WELCH II,
TRADEMARKS AND UNFAIR COMPETITION § 1.05 (2001).
12 1 MCCARTHY, supranote 5, § 2:4.
13 Shell Oil Co. v. Commercial Petroleum, Inc., 928 F.2d 104, 107 (4th Cir. 1991).
14 See 1 MCCARTHY, supra note 5, § 2:4 (explaining how trademarks encourage the production
of quality products).
1s 1 id.
16 1 id. § 2:3.
17 Stacey L. Dogan & Mark A. Lemley, Trademarks and Consumer Search Costs on the Internet, 41
Hous. L. REV. 777, 787 (2004).
18 1 MCCARTHY, supra note 5,
§ 2:5.
19 1 id.
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trademarks that is used to make shopping decisions is relatively inexpensive,
consumers demand additional information regarding the quality of products
and, in turn, make better choices, thereby increasing overall competition in the
market. 20
The facilitation of a low-cost, efficient shopping experience for consumers
also reemphasizes the first function of trademarks, the encouragement of the
production of quality products. 21 Once consumers associate a certain level of
quality with a trademark or brand name, the owner of that trademark or brand
name has an incentive to consistently maintain that level of quality for each
product that bears the same trademark or brand name. 22 Ultimately, by
encouraging the production of quality products and reducing search costs for
consumers, trademarks make the market more efficient overall. 23
In order for a trademark in the United States to be valid, it must be "use[d]
in commerce." 24 For a trademark owner, use in commerce is generally
established by proving that said trademark owner actually did use the mark
commercially throughout the trademark's life cycle. 25 The Lanham Act requires
that a mark be used in commerce to qualify for registration. 26
"[U]se in commerce" means the bona fide use of a mark in the
ordinary course of trade, and not made merely to reserve a right
in a mark. For purposes of this chapter, a mark shall be deemed
to be in use in commerce(1) on goods when(A) it is placed in any manner on the goods or their
containers or the displays associated therewith or on the tags
or labels affixed thereto, or if the nature of the goods makes
such placement impracticable, then on documents associated
20 Dogan & Lemley, supra note 17, at 787.
21 PATISHALL, HILLIARD & WELCH, supra note 11, § 1.05.
22 Id.; see also New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d 302, 305 n.2, 306 n.3
(9th Cir. 1992) ("[Trademarks reduce consumer search costs by informing people that
tralemarked products come from the same source.... Trademark protection . .. guards against
the overuse of resources while also providing incentives for the creation of new combinations of
resources.'.
23 1 MCCARTHY, supra note 5, § 2:3 (discussing the economic functions of trademark).
24 15 U.S.C. § 1127 (2006); see also TRADEMARK LAw & THE INTERNET 77 (Lisa E. Cristal &
Neal S. Greenfield, eds., 1999).
25Cristal & Greenfield, supra note 24, at 77.
26 3 McCARTHY, supra note 5, § 19:108.
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with the goods or their sale, and (B) the goods are sold or
transported in commerce ... .27
Whether a mark has sufficiently been used in commerce is typically decided by a
weighing of the following eight factors:
[1]
[2]
[3]
[4]
[5]
[6]
[7]
[8]
mhe strength of [the mark],
the degree of similarity between the two marks,
the proximity of the products,
the likelihood that the prior owner will bridge the gap,
actual confusion, and
the reciprocal of defendant's good faith in adopting its own
mark,
the quality of defendant's product, and
the sophistication of the buyers. 28
If a trademark owner properly "uses" his trademark, he will satisfy the
eligibility requirements for registration with the U.S. Patent and Trademark
Office. 29 This registration affords eligible owners a tremendous advantage: it
establishes sufficient notice of the commercial use and registration of a
trademark so that another user of the same or a confusingly similar mark
cannot justify his conduct and avoid liability for infringement by claiming
"innocence, good faith, or lack of knowledge."30
2. GeographicalTerms. The degree of relevance of geographical terms to the
aforementioned set of facts is paramount. Trademark terms, such as American,
Boston, and Denver, 31 are geographical in nature. Because of the prevalence of
attempts at trademarking geographical terms, the drafters of the Lanham Act
directly addressed geographical terms.32 The Lanham Act refuses registration to
a trademark if it consists of a mark that "(2) when used on or in connection
with the goods of the applicant is primarily geographically descriptive of
15 U.S.C. § 1127 (2006).
Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961); see also Cristal &
Greenfield, supra note 24, at 78 (discussing the application of "use in commerce").
29 15 U.S.C. § 1051(d)(1) (2002); Cristal & Greenfield, supra note 24, at 77.
30 Davidoff Extension S.A. v. Davidoff Comercio E Industria Ltda., 747 F. Supp. 122, 128
(D.P.R. 1990).
31 2 McCARTHY, supranote 5, § 14:6.50.
32 15 U.S.C. § 1052 (2006).
27
28
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them ... [and] (3) when used on or in connection with the goods of the
applicant is primarily geographically deceptively misdescriptive of them. . . ."3
A "geographically descriptive term" is any word that designates a geographical
location and is "regarded by buyers as descriptive of the geographic location of
origin of the goods or services." 34 A geographical term that serves a descriptive
purpose can designate "any geographic location on earth, such as continents,
nations,... geographical regions, states, . . . cities,. . . streets and addresses, rivers,
maps, a nickname or abbreviation of a geographical area, [or] any other location
referred to by a recognized name."35 Many concerns that are associated with
affording trademark protection to geographic terms, such as the belief that certain
terms should be "universally available to all residents of the locality involved," 36
result in additional obstacles for potential trademark owners to overcome when
attempting to trademark a word or phrase that includes geographical terms. 37
However, descriptive geographical terms can be eligible for trademark registration
and, in many instances, achieve the status of protected, registered trademarks.38
For example, the word "Georgia" is a registered trademark of the University of
Georgia.39 In order for a retailer to legally sell merchandise bearing the "Georgia"
registered trademark, the merchant must obtain licensing through a formal
licensing agreement with the University. 0
Typically, geographic terms are deemed to be valid descriptive marks (or
trademarks) if they have taken on or assumed a secondary meaning.4' "A
geographically descriptive word achieves a secondary meaning once the public
no longer thinks of it as indicating a particular place, but rather associates it
with a particular source." 42 Secondary meaning has also been defined as "the
consuming public's understanding that the mark, when used in context, refers,
not to what the descriptive word ordinarily describes, but to the particular
business that the mark is meant to identify."43 A lack of proof of secondary
33 Id. § 1052(e)(2)-(3).
34 2 MCCARTHY, supra note 5, 5 14:2.
35 2 id. § 14:3.
36 PATTISHALL, HILLIARD & WELCH,
supra note 11, § 2.05.
37 See id.
38 See generaly 2 MCCARTHY, supra note 5, § 14:1.50.
39
4
GEORGIA, Registration No. 3,031,191.
UGAAA Licensing, GEORGIADOGS.COM, http://www.georgiadogs.com/genrel/062306aak.
html (last visited Apr. 12, 2012).
41 See PATISHALL, HILLIARD & WELCH, supra note 11,
§
2.05; see also Great E. Resort Corp. v.
Virtual Resort Solutions, L.L.C., 189 F. Supp. 2d 469, 476 (W.D. Va. 2002).
42 Grat E. Reisort, 189 F. Supp. 2d at 476 (citing Resorts of Pinehurst, Inc. v. Pinehurst Nat'l
Corp., 148 F.3d 417,421 (4th Cit. 1998)).
43 Perini Corp. v. Perini Constr., Inc., 915 F.2d 121, 125 (4th Cir. 1990).
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meaning will prevent a geographical term from obtaining trademark
protection.44 This secondary meaning requirement comes into effect only if a
geographical term is being used descriptively. If, however, a geographical term
is not being used descriptively, no secondary meaning is required. 45
To determine if a geographical term is being used descriptively, the
following series of questions needs to be asked of the mark in question: (1) Is
the mark the name of the place or region from which the goods actually come?
(2) Is the geographic term likely to denote to reasonable buyers that the goods
come from the region or place named? (3) Is the place or region named noted
for these particular goods?46
The first question relates to whether the mark is the name of the geographic
origin of the goods represented by the mark.47 If question one is answered
affirmatively, then the mark is likely being used in a descriptive sense, and
secondary meaning is a prerequisite to obtaining trademark protection. 48 If,
however, the answer to the first question is "no," then the mark is likely being
used in either a "misdescriptive" or "deceptive" sense or in an "arbitrary"
sense.49 If being used arbitrarily, the word or phrase will be eligible for
trademark protection without proof of a secondary meaning.50 A deceptive use
of the term or phrase will call for proof of secondary meaning prior to
trademark protection being granted.5'
When deciding whether geographic terms or phrases are being used
descriptively, the second question deals with whether the geographic term in
question gives reasonable consumers the impression that the goods represented
by the mark are actually from the geographic area being referenced. This
inquiry ultimately hinges on the perception of the reasonable consumer viewing
the mark.5 2 Generally, if this question is answered in the negative, then the
44 See GreatE. Resort, 189 F. Supp. 2d at 476; see also Resorts ofPinehurst,148 F.3d at 421.
45 2 McCARTHY, supra note 5, 5 14:7.
46
2 id.
47
2 id
48 2 id.
49 2 id Misdescriptive is derivative of misdescription, which is defined as "[a] ... falsity that
deceives, injures or materially misleads one." BLACK's LAw DICTIONARY 1020 (8th ed. 2007). A
deceptive act is defined as "conduct that is likely to deceive a consumer acting reasonably under
similar circumstances." Id at 435. Arbitrary means "[d]epending on individual discretion." Id. 112.
5 See 2 McCARTHY, supra note 5, S 14:7; see also RESTATEMENT (THIRD) OF UNFAIR
COMPETITION § 14 (1995).
(
5 See 2 MCCARTHY, supra note 5, § 14:7; see also RESTATEMENT (THIRD) OF UNFAIR COMPETITION
14 (1995) ("[G]eographically misdescriptive .... designations . .. have traditionally been protected
only upon proof of secondary meaning."').
52 See 2 McCARTHY, supra note 5,
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geographic term is being used arbitrarily and is, therefore, not required to obtain
secondary meaning prior to becoming eligible for trademark protection. 3 If,
alternatively, the answer to this second question is "yes," then secondary
meaning will be required prior to a word or phrase being eligible for trademark
protection. 54
The third and final question relating to the descriptive nature of a
geographic term asks whether the geographic area denoted in the word or
phrase is actually famous or known for the particular goods associated with the
word or phrase. This inquiry hinges on whether buyers care if the good in
question is actually a derivative of the region or place being referenced in the
word or phrase considered for trademark protection.55 If buyers are
unconcerned with the actual origin of the good, then the geographic term will
be deemed arbitrary, indicating that no secondary meaning need be proven
prior to trademark protection. 56 On the other hand, if buyers are concerned
with the geographic origin of the good as an inducement to purchase, then
secondary meaning must be shown prior to the word or phrase being afforded
trademark protection.57
3. Trademark Infinngement. In order for the economic goals of trademark law
to be of any significance, protection and enforcement of trademark law are both
necessary and desirable. To guard the sanctity of trademark, the Lanham Act
provides a cause of action for trademark infringement, which is explained as
follows:
[A]ny person who shall, without the consent of the
registrant ... use in commerce any reproduction, counterfeit,
copy, or colorable imitation of a registered mark in connection
with .. . which such use is likely to cause confusion, or to cause
mistake, or to deceive. . . shall be liable in a civil action by the
registrant . 58
s3 2 id.; see also RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 14 (1995).
54 See 2 McCARTHY, supra note 5, § 14:7.
55 Id.
56 Id.
57Id. § 14:9.
58 15 U.S.C. § 1114(1) (2006); see also Dan Sarel & Howard Marmorstein, The Effect of Consumer
Surveys andActual Confusion Eidence in Trademark Litzgadon:An EmpiricalAssessment, 99 TRADEMARK
REP. 1416, 1417-18 (2009) (discussing the factors considered when evaluating likelihood of
confusion in a trademark infringement claim).
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This cause of action ultimately embodies Congress's desire to prevent fraud,
which stems from its belief that "[n]o one has any right to represent his goods
as the goods of another."59
In the United States, likelihood of confusion serves as the test for trademark
infringement. 60 Typically, likelihood of confusion exists when consumers, who
are the primary users of the marks, are likely to associate a certain trademark
with the source of another good or service that is identified by a similar-looking
mark. 61 Proof of likelihood of confusion can be established in any of the
following three ways: "(1) [s]urvey evidence; (2) [e]vidence of actual confusion;
and/or (3) [a]rgument based on a clear inference arising from a comparison of
the conflicting marks and the context of their uses." 62 Therefore, a likelihood
of confusion is not impossible to establish, as actual confusion on the part of
consumers is not a mandatory requirement but instead is only one of three
factors considered when establishing likelihood of confusion. 63
Likelihood of confusion is evaluated and determined by a weighing of the
following eight factors as identified by the Ninth Circuit in AMvF Inc. v. Sleekeraft
Boatr
1.
2.
3.
4.
5.
6.
strength of the mark;
proximity of the goods;
similarity of the marks;
evidence of actual confusion;
marketing channels used;
type of goods and the degree of care likely to be exercised by
the purchaser;
7. defendant's intent in selecting the mark; and
8. likelihood of expansion of the product lines. 64
5 PATrISHALL, HILiARD & WELCH, supra note 11, § 1.02.
6o 15 U.S.C. § 1114(a); see also Sarel & Marmorstein, supra note 58, at 1417; E. & J. Gallo
Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir. 1992) ("The core element of trademark
infringement is the likelihood of confusion, i.e., whether the similarity of the marks is likely to
confuse customers about the source of the products.").
61 Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1229 (3d Cir. 1978), superseded ly re
1985 FED. R.Civ. P. 52(a), as rcogniged in Shire US Inc. v. Barr Labs., Inc., 329 F.3d 348 (3d Cir. 2003).
62 4 MCCARTHY, supra note 5, § 23:2.50.
63 AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 353 (9th Cir. 1979), abrogated in part on other
grounds recognited ly Mattel, Inc. v. Walking Mountain Prods., 353 F.2d 792 (9th Cir. 2003)
(replacing the Sleekeraft eight factor analysis with a nominative fair use test in the context of a fair
use defense); seealso Sarel & Marmorstein, supra note 58, at 1419.
64 Sleekcraft, 599 F.2d at 348-49.
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Although each factor is taken into account when determining whether a
likelihood of confusion actually exists, the third Sleekcraft factor, similarity of the
marks, may actually serve as the most important indicator of a likelihood of
confusion. 65 Generally, if a consumer's perception is the same when reading
and evaluating both of the marks in question, the chance that a likelihood of
confusion exists greatly increases.66
4. Trademarks and the Internet. To fully comprehend the impact that
trademark law has on the issue at hand, namely the CLC's attempt at stifling
small business owners' online marketing techniques, a discussion of the
interaction between trademark law and the Internet is necessary. Because of the
vital importance of Internet commerce, the Lanham Act has rapidly adapted
and conformed to the use of trademarks on the World Wide Web. 67 Also many
courts have grappled with the application of established trademark law to the
Web. 68 For example, the Sleekeraft balancing test used to determine whether a
trademark is being used in commerce is much more difficult to apply in the
context of Internet commerce.69
In early 2000, the Ninth Circuit determined that the three most important
Sleekcraft factors for likelihood of confusion in the context of the Internet (also
known as the Internet trinity) were: "(1) the similarity of the marks, (2) the
relatedness of the goods or services, and (3) the 'simultaneous use of the Web
as a marketing channel.' "70 In 2002, however, the Ninth Circuit expanded its
previous view on likelihood of confusion with regard to the World Wide Web
by holding that "[w]hen this 'controlling troika,' or 'internet trinity,' suggests
confusion is likely, the other factors must 'weigh strongly' against a likelihood
of confusion to avoid the finding of infringement."71
65 Ford Motor Co. v. Summit Motor Prods., Inc., 930 F.2d 277, 293 (3d Cir. 1991).
66 Opticians Ass'n of Am. v. Indep. Opticians of Am., 920 F.2d 187, 195 (3d Cit. 1990).
67 See Deborah F. Buckman, Annotation, Lnham Act Trademark Infringement Actions in Internet
and Website Context, 197 A.L.R. FED. 17, 17 (2004).
68 See Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936, 942 (9th Cir. 2002)
(discussing the process of evaluating a likelihood of confusion on the internet); GoTo.com, Inc.
v. Walt Disney Co., 202 F.3d 1199, 1205-07 (9th Cir. 2000) (discussing problems arising from
trademark claims on the Internet).
69 Cristal & Greenfield, supra note 24, at 78.
70 GoTo.com, 202 F.3d at 1205 (quoting Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp.,
174 F.3d 1036, 1054 n.16 (9th Cir. 1999)); see also Louis ALTMAN & MALLA POLLACK, 3A
CALLMAN ON UNFAIR COMPETITION, TRADEMARKS, AND MONOPOLIEs § 21:13 (4th ed. 2011)
(discussing the Sleekcraft factors in the context of the Internet).
71 3A CALLMAN, supra note 70, 5 21:13 (quoting Interstellar,304 F.3d at 942).
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Of the Sleekeraft factors that comprise the "Internet trinity," similarity of the
marks is arguably the most important factor. 2 Similarity of marks is measured
by a number of different variables, including "color and physical appearance,
typeset, design and overall packaging, the specific words used as part of the
mark, placement of the words, and use of other descriptive words or brand
names in conjunction with the mark." 73 In the Internet context, however, the
ability of consumers to distinguish between different trademarks becomes
increasingly diminished.74 For instance, the Ninth Circuit has recognized that
" even services that are not identical are capable of confusing the public' in
cyberspace."75
Specifically, trademarks' appearances are more similar when used in a single
medium, namely websites, because the marks "tend to vary less than trademarks
which are used on different types of media, including packages, containers,
displays, magazine advertisements, etc." 76 The singular medium problem
becomes particularly apparent and more easily understood when analyzing it
from the perspective of sellers of diverse goods, who are equipped with the
77
knowledge that web pages are available to an entire universe of consumers.
This knowledge makes it incredibly tempting for sellers to link their products to
the sites of other sellers, often leading to consumer confusion.78 Because of
consumers' difficulty in distinguishing seemingly similar trademarks on the
World Wide Web, courts and trademark owners alike attempt to mitigate
judicial confusion related to this matter by placing a greater emphasis on
whether the mark itself has been used in commerce. 79
The last variable outlined by the Ninth Circuit as a key Sleekcraft factor for
purposes of the World Wide Web is synchronized use of the Internet as a
marketing conduit.80 Over time, however, this factor has become less
important for purposes of determining whether, in fact, a likelihood of
72 See Interstellar,304 F.3d at 942; see also Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp.,
174 F.3d 1036, 1054 (9th Cir. 1999) ("The similarity of the marks will always be an important
factor.'.
73 Molly S. Cusson, Note, Reverse Confusion: Modying the Polaroid Factors to Achieve Consistent
Results, 6 FoRDHAM INTELL. PROP. MEDIA & ENT. L.J. 179, 210 (1995).
74 See Cristal & Greenfield, supra note 24, at 78-79 (noting consumers' "increased difficulty in
distinguishing marks on the internet").
7s Halo Mgmt., LLC v. Interland, Inc., 308 F. Supp. 2d 1019, 1036 (N.D. Cal. 2003) (quoting
GoTo.com, 202 F.3d at 1206).
76 Cristal & Greenfield, supra note 24, at 79.
77 Id.
78 Id.
79 Id.
* GoTo.com, 202 F.3d at 1205.
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confusion exists.8' The Eleventh Circuit has gone so far as to view the
similarity of marketing channels, namely use and maintenance of websites on
the Internet, as a factor that weighs against a likelihood of confusion.82 That
court reasoned that the parties' utilization of "separate and distinct" web pages
represented to consumers that they were "two completely unrelated business
entities."
83
To evaluate web-based trademark infringement, a weighing of the Sleekcraft
factors (with emphasis added on the "Internet trinity"8) is necessary and
appropriate.85 However, although paramount to trademark infringement,
likelihood of confusion is often fleeting in nature.86 Although the Lanham Act
has been modified in order to adapt to the nuances of the Internet and to
address challenges trademark owners face with regard to the Web, some critics
still believe that trademark law should not be used to solve conflicts.87
Ultimately, these critics of utilizing trademark law to solve web-based conflicts
believe that "trademark law fails to take into account the unique nature of the
Internet and the new sets of 'rights' which are created by its very existence and
88
use."
81 See Rearden LLC v. Rearden Commerce, Inc., 597 F. Supp. 2d 1006, 1024 (N.D. Cal. 2009)
("The vast majority of companies today utilize some form of an Internet site and, therefore, this
factor alone cannot be determinative.'); Playboy Enters., Inc. v. Netscape Commc'ns Corp., 354
F.3d 1020, 1028 (9th Cir. 2004) ("Given the broad use of the Internet today, the same could be
said for countless companies. Thus, [the marketing channels used] merits little weight.").
82Tana v. Dantanna's, 611 F.3d 767, 778 (11th Cir. 2010) (discussing the effect of both parties
using the Internet as a marketing medium).
83 Id.
84 Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936, 942 (9th Cir. 2002).
85 GoTo.com, 202 F.3d at 1205 (quoting Brookfield Commnc'ns, Inc. v. W. Coast Entm't Corp.,
174 F.3d 1036, 1054 (9th Cit. 1999)) ("[The eight-factor test is a pliant one, in which 'some
factors are much more important than others.' ").
86 Michael Grynberg, The Road Not Taken: InitialInterst Confusion, ConsumerSearcb Costs, and the
Challenge ofthe Intemet, 28 SEATTLE U. L. REV. 97, 97-98 (2004) ("Although a consumer may make
an initial mistake about a product's source, affiliation, or sponsorship, she might still choose to
buy the product after the true facts are known.").
87Milton Mueller, Trademarks and Domain Names: Papeny Rights and Institutional Evolution in
Cyberspace, in COMPETITION, REGULATION AND CONVERGENCE: CURRENT TRENDS IN
TELECOMMUNICATIONS POLICY RESEARCH 51 (Sharon Eisner Gillet & Ingo Vogelsang eds., 1999)
('The bias toward trademark owners has been exacerbated by dispute resolution procedures used by
domain name registries that privilege trademark rights over all other claims to the right to use a
name.").
88Cristal & Greenfield, supra note 24, at 79.
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C. FAIR USE
Were the CLC correct in its assertions that locally-owned small businesses
are infringing on its trademarks, the small businesses would not be without a
defense. Fair use is a well-established defense to a claim of trademark
infringement.89 Although a mark may meet all federal registration requirements
and may be considered a completely valid trademark, the Lanham Act
acknowledges the following defense:
[T]he use of the name, term, or device charged to be an
infringement is a use, otherwise than as a mark, of the party's
individual name in his own business, or of the individual name of
anyone in privity with such party, or of a term or device which is
descriptive of and used fairly and in good faith only to describe
the goods or services of such party, or their geographic
origin . .09..
Additionally, the common law fair use defense recognizes that " '[a] junior
user is always entitled to use a descriptive term in good faith in its primary,
descriptive sense other than as a trademark.' "91
Section 33(b)(4) of the Lanham Act requires that three elements be
established to successfully assert a fair use defense. 92 The three elements are (1)
defendant's use of the term is not as a trademark or service mark; (2) defendant
uses the term "fairly and in good faith"; and (3) defendant uses the term "only
to describe the goods or services."93
The first element of fair use, which requires that a defendant not use the
term as a trademark or service mark, 94 seems relatively straightforward at first
glance, but after a closer look, this element is a bit ambiguous. Use of the term
at issue as an "attention-getting symbol" can signify infringing use.95 However,
when the term at issue is used in conjunction with a conspicuous visual of a
defendant's own mark, the use is not deemed to be infringing.96
supra note 5, § 11:49.
15 U.S.C. § 1115(b)(4) (2006); see also 2 MCCARTHY, supra note 5, 5 11:49.
91 Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150-51 (9th Cir. 2002) (quoting 2 McCARTHY,
supra note 5, § 11:45).
92 See 2 McCARTHY, supra note 5, § 11:49 (citing Seaboard Seed Co. v. Bemis Co., 632 F. Supp.
1133, 1138 (N.D. Ill. 1986)).
89 See 2 McCARTHY,
90
93 2 id.
94 2 id.
95 2 id.§ 11:46.
96 2 id.
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The second element of a valid fair use defense, which requires that a mark
be "used fairly and in good faith" is somewhat ambiguous.97 In order to satisfy
this element, the party asserting the defense need not establish that that the use
of the mark was nonconfusing.98 On the contrary, "the common law of unfair
competition .. . tolerated some degree of confusion from a descriptive use of
words contained in another person's trademark."99 Ultimately, confusion alone
does not negate an otherwise valid fair use defense. 0 0
Also related to the second element, a lack of good faith is evidenced by a
secondary user's "intent to trade on the good will of the trademark holder by
creating confusion as to source or sponsorship."10' According to the Third
Circuit, an inference of a lack of good faith may additionally be drawn from a
finding of the following two factors: "(1) defendant's intentional breach of an
agreement not to use the disputed mark; or (2) defendant's use with the intent
to 'trade upon and dilute the good will' represented by the plaintiffs mark."10 2
Additionally important with respect to the second element is the fact that
constructive notice, which is established by the registration of a trademark, does
103
not preclude the purely descriptive use of a registered mark by a junior user.
The third and final element of a fair use defense requires a secondary user to
employ the trademarked term only to describe goods or services. However,
describing the goods is not limited merely to words representing particular
attributes, for example, quality or size. 104 In other words, actual, literal
descriptive use of a trademarked term by a junior user is not an absolute
requirement necessary for a party to invoke the protection of the fair use
defense. 05
97
2 id.
98 KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 119 (2004); see also
2 McCARTHY, supra note 5, § 11:49.
9 KP Permanent Make-Up, 543 U.S. at 119.
100 Id. at 120.
101 EMI Catalogue P'ship v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 66 (2d Cir.
2000) (citing Inst. for Scientific Info., Inc. v. Gordon & Breach, Sci. Publishers, Inc., 931 F.2d
1002, 1009-10 (3d Cir. 1991)); see also id. ("Any evidence that is probative of intent to trade on the
protected mark would be relevant to the good faith inquiry."); J.A. Apparel Corp. v. Abboud, 568
F.3d 390, 401 (2d Cir. 2009).
102 Inst. for Scientific Info., Inc. v. Gordon & Breach, Sci. Publishers, Inc., 931 F.2d 1002, 1009
(3d Cit. 1991).
103 Wonder Labs, Inc. v. Procter & Gamble Co., 728 F. Supp. 1058, 1062 (S.D.N.Y. 1990)
("The fair use defense is available even when the plaintiffs mark has become incontestable.");
BLACK's LAW DICTIONARY 865 (8th ed. 2007) ("junior user" is defined as "[a] person other than
the first person to use a trademark").
supra note 5, § 11:49.
10 2 id.; see general# Cosmetically Sealed Indus., Inc. v. Chesebrough-Pond's USA Co., 125 F.3d
104 2 MCCARTHY,
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D. IMPORTANT TRADEMARK CASES DISCUSSING COLLEGIATE COLORS AND
MARKS
A glimpse into the interaction between trademark law and collegiate colors
and marks provides the necessary background to evaluate the CLC's claims of
trademark infringement. This discussion primarily focuses on two important
cases that discuss collegiate colors and marks and trademark law: UGA Athletic
Ass'n v.Laite and Bd. ofSupenisors v.Smack Apparel. 06
1. University of Georgia Athletic Association v. Laite. In Laite, the
University of Georgia Athletic Association (UGAAA), brought suit against a
beer wholesaler out of Macon, Georgia, that sold a brand called "Battlin'
Bulldog Beer." 07 In its complaint, UGAAA alleged that the defendant's red
and black beer cans, which portrayed the University of Georgia's mascot, an
English bulldog wearing a sweater with a large "G," infringed on UGAAA's
registered and unregistered marks. 08
In holding that the district court's decision concluding that the beer cans
created a likelihood of confusion was not clearly erroneous, the Eleventh
Circuit considered a variety of factors regarding the beer can, as opposed to
finding that one particular factor was wholly determinative.109 Ultimately, the
Laite court took the following factors into consideration: the colors used on the
can (the University of Georgia's school colors-red and black), the name of the
beer, and the letter "G" on the sweater worn by the bulldog (as it seemingly
indicated that the bulldog on the can was, in fact, the University of Georgia's
mascot)." 0 Because all three attributes of the "Battlin' Bulldog Beer" can
"misuse[d] [UGAAA's] reputation and good will,""' the Eleventh Circuit
affirmed the district court's decision to enjoin Defendant Laite from further
distributing or marketing the infringing beer cans. 1 2
2. Board of Supervisors for Louisiana State University Agricultural &
Mechanical College v. Smack Apparel. In Smack Apparel, the Fifth Circuit
found in favor of the plaintiffs, the CLC, in addition to four universities,
including Louisiana State University, Ohio State University, Oklahoma
University, and University of Southern California, in their suit against Smack
28 (2d Cir. 1997); Dessert Beauty, Inc. v. Fox, 568 F. Supp. 2d 416 (S.D.N.Y. 2008).
106 See general# UGA Athletic Ass'n v. Laite, 756 F.2d 1535 (11th Cit. 1985); Bd. of Supervisors
v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008).
107 Laite, 756 F.2d at 1537-38.
Id
Id. at 1544.
110 Id at 1544-45.
111 Id. at 1547.
108
10
112
Id
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Apparel Company, a manufacturer of t-shirts designed to flaunt collegiate
colors and popular phrases in hopes of soliciting the support of college sports
fans."13 The complaint alleged that Smack Apparel engaged in trademark
infringement and unfair competition, claiming that Smack's goods were so
analogous to the Universities' licensed products and competed directly with the
Universities' goods at or close to the athletic competitions referenced on the
shirts, thereby deceiving or misleading customers into thinking Smack's goods
were actually licensed or produced by the Universities."14
The Fifth Circuit ultimately accepted the plaintiffs' argument, concluding
that a likelihood of confusion did exist between "the presence of the
Universities' marks and the Universities themselves. . . ."11s Important to the
Fifth Circuit's decision was the court's belief that Smack Apparel's actual use of
the collegiate colors (plus a variety of slogans and designs affixed on an
assortment of t-shirts) stemmed from its desire to identify the respective
universities as the key factors incorporated into shirts' designs.11 6 In concluding
that a likelihood of confusion existed, the court relied heavily on Smack
Apparel's goal of benefiting from the reputations of the Universities.
Specifically, the court noted that
Smack's use of the Universities' colors and indicia [was] designed
to create the illusion of affiliation with the Universities and
essentially obtain a "free ride" by profiting from confusion
among the fans of the Universities' football teams who desire[d]
to show support for and affiliation with those teams. This
creation of a link in the consumer's mind between the t-shirts and
the Universities and the intent to directly profit therefrom
result[ed] in "an unmistakable aura of deception" and likelihood
of confusion." 8
Ultimately, the Fifth Circuit based its decision in favor of the plaintiff
Universities and the CLC on the conclusion that the consuming public likely
believed that Smack Apparel's t-shirts were endorsed by the various
universities.' 19
113
114
Smack Apparel, 550 F.3d at 471-72.
Id. at 473.
us Id. at 485.
116
117
Id.
Id
118 Id. at 483-84.
119 Id. at 485.
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E. MARKETING TECHNIQUES USED BY BOUTIQUES
To effectively compete in the open market, most small retail clothing
business owners realize that "[fjashion boutiques are all about image and style,
not only in the products you sell but also for the customers who wear your
clothing line." 20 Moreover, fashion retailers understand that "[a] hallmark of
independent stores is their personal knowledge of customers."121 In catering to
customers in an effort to increase overall profits, local boutique owners have
begun specializing in "custom customer service."' 22 By designing and using
online marketing schemes that make the shopping experience easier and more
enjoyable for consumers, boutique owners are able to "kill two birds with one
stone," first by pleasing repeat customers and second by prompting those
repeat customers to tell other potential customers how much they enjoyed their
23
experience at a particular store.1
Wearing the colors of your favorite college football team to a popular
athletic event is not optional for die-hard fans, especially in the South.
Collegiate allegiance has an immense impact on the types of purchases made by
the consuming public and is often exemplified by those consumers via
wardrobe choices.124 Fashion retailers, cognizant of the societal commitment to
wearing school colors to athletic events, have responded in kind to the demand
by competing against one another to provide consumers with the desired
commodities.125 Complete responsiveness on the part of local boutiques to the
desires of its clientele via online marketing techniques designed to enhance the
overall shopping experience is precisely the type of marketing scheme that
embodies "custom customer service." Such detailed customer service aids
120 Fashion Boutique Markeing: Branding,Ps PRINT, http://www.psprint.com/resources/business-m
arketing-plans/fashion-boutiques/fashion-boutique-marketing-branding.asp (last visited Apr. 12,
2012).
121 Christina Binkley, How Boutiques PamperTop Customers, WALL ST. J., July 21, 2011, at D20.
122 Jay Simcic, Small Business Markeing--HowBoutiques PamperTop Customers And What It Means To
Your Business, PROFIT CONVERGENCE, INC., http://www.profitconvergenceinc.com/520/small-busi
(last
ness-marketing-how-boutiques-pamper-top-customers-and-what-it-means-to-your-business/
visited Apr. 12, 2012).
123 Id. ("[W]hen you begin doing things out of the ordinary and doing things that catches [sic]
people's attention, you will be talked about. And when you're talked about you will inevitably get
more business."); see Gerald T. Tschura, Likehood of Confusion and Expressive Functionahy:A Fresh
Look at the Ornamental Use of InstitutionalColors, Names and Emblems on Apparel and Other Goods, 53
WAYNE L. REV. 873, 874 (2007) ("Showing ohe's pride for, love of, and/or affiliation with a
particular college or university is not only commonplace, it is woven into our cultural fabric.").
124 Tschura, supra note 123, at 874.
125 Id.
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boutique owners in competing with larger department stores, especially during
the current economic downturn.126
Additionally, a well-functioning website is crucial to these small businesses,
in furtherance of excellent customer service.'2 7 "When it comes to boutique
marketing you simply cannot underestimate the importance of the Internet and
World Wide Web." Stellar display of merchandise coupled with easy navigation
for consumers are two of the most important goals for boutique owners to
keep in mind when creating a first-rate website.128 Today, many boutiques are
taking note of these goals and are achieving them by utilizing hyperlinks to
direct customers to specific groupings of clothing and accessories.129
III. ANALYSIS
By alleging trademark infringement against a boutique that strategically
groups items on its website,ts 0 the CLC oversteps the boundaries of trademark
protection. The CLC's allegations are based on a common practice'>l employed
by boutiques, namely the use of a sidebar or drop-down menu that utilizes a
phrase ("Be the talk of the tailgate!"),1 32 along with a shortened version of
university names used as hyperlinks to direct customers to other pages, where
clothing and accessories are grouped together based on the school's respective
colors. 33 This marketing technique is the latest target of the CLC. The CLC
lacks the legal foundation for categorizing this marketing technique as
trademark infringement and unfair competition, especially since this
informational technique, were it used in person by a sales associate guiding a
customer to a particular area of the store that is grouped according to school
colors, would be completely legal.
Though the geographical and other shortened collegiate terms are registered
trademarks, trademark infringement and unfair competition are not valid claims
against these boutique owners for a number of reasons. First and most
126
Binkley, supra note 121.
Everlin Wong, Boudque Marketing - How to Make Your Business a Success (June 11, 2008),
http://ezinearticles.com/?Boutique-Marketng---How-to-Make-Your-Business-a-Success&id=12
41578 ("When it comes to boutique marketing you simply cannot underestimate the importance
of the Internet and World Wide Web").
128 Id.
129 See general4THE RED DRESS BOUTIQUE, supra note 2; see also DRESS U, supra note 2.
130 THE RED DRESS BOUTIQUE, supra note 2.
127
132
See general# id.; see also DRESs U, supra note 2.
THE RED DREss BOUTIQUE, supra note 2.
133
Id
131
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importantly, these boutiques1 34 are merely using some trademarked terms in
their marketing techniques, not affixing trademarked terms to any goods
actually being sold by the boutiques. Even if stores are using registered
trademarks in an otherwise infringing manner, because of the boutiques' pure
marketing use of the protected marks on the World Wide Web, a court's
balancing of the Sleekcraft factors in the context of the Internet will likely weigh
in favor of the boutiques. Second, were the CLC to be successful in asserting
claims of trademark infringement against the boutiques, the small business
owners would likely be able to assert a fair use defense. Third and finally, prior
trademark infringement cases that established the common law within the realm
of college colors and marks are distinguishable from the issue at hand. Each
reason thereby clarifies the high probability that the boutiques will enjoy the last
laugh and say "game over" to the CLC's claims.
A. CLC 0; BOUTIQUES 1-PURE MARKETING USE VIA THE INTERNET
1. Goals of Trademark Law. Small business owners are playing to their
strengths and utilizing methods of marketing designed to accommodate their
customers. The CLC's attempt to stifle boutique owners' online marketing
techniques likely will not succeed initially because it does not square with the
goals of trademark law, namely (1) protecting consumers in such a way that they
can be confident that the purchases they make are the ones they intended to
make, and (2) protecting the owner of a trademark from infringement by those
hoping to free ride on the efforts of the owner." 5 These goals are not inhibited
by this marketing technique, namely the custom grouping of clothing and
accessories according to college team colors on boutiques' websites, employed
by local boutique owners.
Regarding the first goal of trademark law, here, consumers are protected and
assisted by use of this marketing strategy because boutique owners employing
this technique afford customers a heightened shopping experience via custom
customer service. 136 The marketing technique is not a way to confuse
consumers as to the particular brand of a good. On the contrary, this method is
simply a grouping mechanism designed to make shopping simpler and more
efficient for the customer.
134 See general# id; see also Entourage Clothing and Gifts, http://www.entourageathens.com/ind
ex.php/about (last visited Mar. 6, 2012).
135 Rogers, supra note 5, at 181-82; see also 1 McCARTHY, supra note 5, § 2.2 (discussing the dual
goals trademark law seeks to further).
136 Kickoff Cutie, supranote 2.
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The second goal of trademark law is also not constrained by local boutique
owners' use of this strategic marketing technique, as the merchants are not
attempting to free ride on the efforts of the original trademark holders, the
universities.1 37 The store owners' uses of registered trademarks, such as
"Georgia," 38 are not attempts at free riding. The boutique owners are not
using the trademarks to trick consumers into spending money in a particular
boutique, as opposed to in a school bookstore, based on what they think are
"Georgia" licensed products. Instead, they use the shortened name of the
university to assist customers based on which particular school each customer
chooses to support, thereby increasing overall customer satisfaction.
2. Trademarks and the Internet. Because this challenged marketing technique is
used over the Internet, the chances for a successful trademark infringement
Determining likelihood of confusion for
claim are further diminished.
trademarks within the realm of the Internet depends on: "(1) the similarity of
marks, (2) the relatedness of goods, and (3) the 'simultaneous use of the web as
a marketing channel.' "139
The first and most important factor, similarity of the marks, is determined
by a number of different variables, ranging from design, to color and
placement.14 0 Although consumers' ability to distinguish between different
trademarks becomes increasingly difficult in the context of the Internet,141 here,
merchants' actual use of the trademark makes it quite simple for users to
delineate between the store and the various universities, as evidenced by the fact
that the trademark being used to assist customers in their shopping experience
is color neutral and does not include the schools' mascots. Ultimately, the
neutral state of these marks does not confuse or trick consumers into believing
that they are actually purchasing a good from the college selected from a dropdown menu. For these reasons, the CLC will likely be unable to satisfy the first
of the "Internet trinity" factors.
The second "Internet trinity" factor, relatedness of the goods,142 likely
weighs in favor of the boutiques. The boutiques are simply using the
trademarks as web-based tools to guide customers to the stores' main products,
clothing and accessories, while the universities use the trademarks to identify
themselves as collegiate institutions. Additionally bolstering the boutique
Rogers, supra note 5.
supra note 39.
139 GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1205-07 (9th Cir. 2000) (quoting
Brookfield Commc'ns, Inc. v. W. Coast Entn't Corp., 174 F.3d 1036, 1054 n.16 (9th Cir. 1999)).
140 Cusson, supra note 73, at 210.
141 Cristal & Greenfield, supra note 24, at 78-79.
142 GoTocom, 202 F.3d at 1205.
137
138 GEORGIA,
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owners' argument is the reality that the allegedly infringing trademark is not
present on the actual articles of clothing or other accessories being marketed
and sold, removing all doubt in consumers' minds that the goods are licensed
by the various universities. This difference in goods weighs in favor of the
boutiques, and the CLC will likely be unable to satisfy this second prong of the
Internet trinity.
The third and final Internet trinity factor, "simultaneous use of the web as a
marketing channel,"l43 also tips in favor of owners of retail clothing stores.
Although both universities'44 and boutique owners 145 utilize the World Wide
Web, their uses are so different that consumers would likely never be harmed
by the marks co-existing on the Internet. Further, merchants are simply using
the mark as a tool to guide clients to the different wardrobe and accessory
choices available from a variety of different designers for upcoming athletic
events, not to trick them into buying a good they think is licensed by a
university. The CLC will, in all likelihood, be unsuccessful under the third
prong of the Internet trinity.146 Since all three Internet trinity factors probably
cannot be satisfied by the CLC's claims, a court will likely rule in favor of a
small business owner, should the CLC decide to pursue a trademark
infringement claim against boutique owners.
B. CLC 0; BOUTIQUES 2-FAIR USE DEFENSE
Assuming the CLC were able to successfully plead trademark infringement
against a boutique, the store owner still has another option, namely the fair use
defense as long as the owner used a "descriptive term in good faith in its
primary descriptive sense, other than as a trademark."1 47 The first fair use
element, requiring that the mark not be used as a trademark,148 is relatively selfexplanatory. This element is satisfied here, as boutique owners are clearly not
using the universities' trademarks as the boutiques' trademarks or as identifying
marks in any other capacity on the stores' websites.
Satisfying the second element of a valid fair use defense, that the mark be
"used fairly and in good faith,"149 is a bit trickier.150 Confusion alone does not
143 Id. at 1205-07.
144
145
146
147
148
See generaly http://www.georgiadogs.com/ (last visited Nov. 17, 2011).
See generaly THE RED DRESs BOUTIQUE, supranote 2.
GoTo.com, 202 F.3d at 1205, 1207.
Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150 (9th Cir. 2002).
See Seaboard Seed Co. v. Bemis Co., 632 F. Supp. 1133,1138 (N.D. Il. 1986).
Id.
150 KP. Permanent Makeup, Inc. v. Lasting Impressions I, Inc., 543 U.S. 111, 119 (2004).
149
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invalidate an otherwise effective fair use defense.'15 Confusion stemming from
boutique owners' use of the schools' trademarks via online marketing is highly
improbable as visitors of the boutiques' websites are looking for fashionable
gameday attire, not for licensed collegiate memorabilia. However, even if some
confusion did occur, the fair use defense would still be valid, as some level of
confusion is tolerated, and here, few, if any, consumers would suffer confusion
from the dual use of these terms.152 Ultimately, a finding of some consumer
confusion, standing alone, would not preclude the boutique owner from putting
on a valid fair use defense.'53
With regard to the good faith portion of the second fair use element, courts
look to a junior user's intent to profit from the trademark's good will with the
creation of consumer confusion regarding the sponsorship or source of a
good.154 Additionally, the following two factors indicate a lack of good faith: (1)
intentional breach of a contract between a trademark owner and a junior user in
which the junior user agreed not to use the mark, and (2) a junior user's
utilization of the trademark coupled with his intent to free ride and dilute the
good will denoted by original owner's mark.s55 Here, each factor indicates that
the boutique owners showed no lack of good faith since (1) it is highly unlikely
that a contract between the boutiques and the universities exists, and (2) the
boutique owners have neither intended nor attempted to free ride on the
universities' marks or to dilute them. Instead of hoping to better their
reputations in the eyes of consumers by feigning licensure from universities, the
stores are simply using the marks via a marketing technique designed to
enhance customers' shopping experiences, thereby increasing profits. The
second fair use defense element is likely satisfied.
The third and final element of a valid fair use defense, the requirement that
the mark be used in a purely descriptive sense,' 56 is also satisfied. Even a
showing of constructive notice, which is established by registering a trademark,
does not prevent a junior user from utilizing a trademark for a purely
descriptive purpose.15 The fact that store owners use the universities' marks
Is'
Id. at 119-20.
Id.
1s3 Id.
15 2 McCARTHY, supra note 5, 5 11:49; see also E.M.I. Catalogue P'ship v. Hill, Holliday,
Connors, Cosmopulos, Inc., 228 F.3d 56, 66 (2d Cir. 2000) ("Any evidence that is probative of
intent to trade on the protected mark would be relevant to the good faith inquiry.").
155 2 McCARTHY, supra note 5, § 11:49 (quoting Inst. for Scientific Info., Inc. v. Gordon &
Breech, Sci. Publishers, Inc., 931 F.2d 1002, 1009 (3d Cir. 1991)).
156 2 id.
156 2 id.
1s7 2 id. (citing Wonder Labs, Inc. v. Procter & Gamble Co., 728 F. Supp. 1058, 1062 (S.D.N.Y.
152
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simply to describe the gruping of the clothing and accessories sold by the
boutiques and not to describe the goods themselves emphasizes the purely
harmless use of the marks to the trademark's value and good will. At the heart
of the boutique owners' objective is their desire to create an efficient, enjoyable
shopping experience for customers through use of "custom customer service,"
which is facilitated through the descriptive use of universities' trademarked
terms in guiding customers to the correct grouping of color-coordinated
clothing and accessories. 58 Boutiques seek not to take advantage of and harm
the goodwill represented by the universities' marks, precluding any claim of bad
faith on the part of store owners. For these reasons, the third and final fair use
defense element is probably satisfied. Because all three elements are likely
satisfied, the probability of the boutique owners asserting a successful fair use
defense is high.
C. GAME OVER: CLC 0; BOUTIQUES 3--CLEAR DISTINCTION FROM PRECEDENT
Although no precedent directly on point with the issue at hand exists, the
Laite and Smack Apparel cases can be used to hypothesize about the success or
failure of the CLC's potential trademark infringement claims. While the colors
and mascot on the beer can in Laite created confusion among consumers, 5 9 in
this case, the only factor that could potentially indicate a likelihood of confusion
is the use of the mark itself. No additional attributes of the store owners'
marketing technique, other than the fact that the clothing and accessories linked
to a given college's trademark are comprised of said college's school colors,
would result in a likelihood of confusion because consumers visit the websites
to find fashionable game day attire, not to locate goods licensed by a particular
university. Because of the lack of likelihood of confusion in the present case,
the Laite court would likely find no trademark infringement.
Second, this case is different from Smack Apparel, in which the infringing t-
shirts competed directly with products licensed by the Universities. 6s0 Here, the
store owners are using the universities' marks not to create an illusion of
endorsement by the respective colleges but instead to aid clients in finding the
perfect outfit in which to show support for their respective schools. These
local businesses' websites could not be construed as attempting to indicate
illegitimate sponsorship by the various universities. Because the boutique
1990) ("The fair use defense is available even when the plaintiffs mark has become
incontestable.")).
15 Simcic, supra note 122.
15 UGA Athletic Ass'n v. Laite, 756 F.2d 1535, 1544-45 (11th Cit. 1985).
160Bd. of Supervisors v. Smack Apparel Co., 550 F.3d 45, 473 (5th Cit. 2008).
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owners are merely using the schools' marks to better serve their customers and
not to create the illusion of endorsement, the Smack Apparel court would likely
also hold that the boutique owners are not liable for trademark infringement.
IV. CONCLUSION
Think back to the beginning of this Note and remember the description of a
sea of red and black at a University of Georgia football game. In the stands,
just before the team runs out onto the field, over 90,000 fans are going crazy
with anticipation, waiting to get that first glimpse of their favorite team on game
day. Behind the scenes, enhancing this special game day experience are
numerous boutiques who make the Bulldog faithful's dream ensembles a reality.
In order to seamlessly bridge the gap from boutique to consumer, savvy small
business owners have executed a marketing technique that easily connects
clients with game day ensembles comprised of their favorite college team's
colors.
The CLC is attempting to prevent boutique owners from using this legal,
web-based marketing technique by threatening them with trademark
infringement litigation via the issuance of heavily-worded cease and desist
letters. Basically, the "big guys" (the CLC and universities) are trying to use
their size and resources to intimidate the "little guys" (local store owners) and
to prohibit them from utilizing this perfectly legal, ingenious marketing system.
However, because of (1) the boutique owners' pure marketing use of the marks
via the Internet, (2) a valid fair use defense, and (3) distinguishable precedent,
the CLC's likelihood of success in asserting a valid trademark infringement
claim is almost nonexistent.
The CLC should be barred from the continuation of such aggressive,
unwarranted harassment. Store owners' (and their employees) in-store, verbal
use of university trademarks, a common practice devoted to guiding customers
toward outfits and accessories representing certain school colors, would never
be considered trademark infringement; therefore, the use of this technique
online should also be permissible. Ultimately, the CLC crossed the line in
alleging frivolous claims of trademark infringement against boutique owners.
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